Open Sea Distribution Corp. v. Artemis Distribution, LLC

692 F.Supp.3d 1151

OPEN SEA DISTRIBUTION CORP. and Pro Design Plus SAS, Plaintiffs, v. ARTEMIS DISTRIBUTION, LLC, a New York Company, Simon Mansell,an individual, and Lumiere SRL, an Italian Company, Defendants.

Artemis Distribution, LLC, v. Open Sea Distribution Corp. and Pro Design Plus SAS, Counter-Defendants,andNeil Porras, Third-Party Defendant.

Case No. 3:20-cv-1440-TJC-PDB

United States District Court, M.D. Florida, Jacksonville Division

Signed September 19, 2023

James R. Menker, Holley & Menker, PA, Atlantic Beach, FL, Alejandro G. Martinez-Maldonado, Thomas Herbert Stanton, Stanton IP Law Firm, P.A., Tampa, FL, Matthew E. Swihart, Dan Newlin Injury Attorneys, Orlando, FL, William Jason Odom, North Florida Lawyers, PLLC, St. Augustine, FL, for Plaintiff/Counter-Defendant Open Sea Distribution Corp.

James R. Menker, Stephanie C. Alvarez, Holley & Menker, PA, Atlantic Beach, FL, William Jason Odom, North Florida Lawyers, PLLC, St. Augustine, FL, for Plaintiff/Counter-Defendant Pro Design Plus Sas.

Alton Hare, Tensegrity Law Group, McLean, VA, Christopher S. Casieri, McNeely Hare & War, Princeton, NJ, Daniel M. Radke, Pro Hac Vice, Matthew D. Powers, Pro Hac Vice, Robert L. Gerrity, Pro Hac Vice, Tensegrity Law Group LLP, Redwood Shores, CA, Renita S. Rathinam, McNeely, Hare & War LLP, Washington, DC, Crystal T. Broughan, Marks Gray, PA, Jacksonville, FL, for Third-Party Plaintiff & Counterclaimant.

Alton Hare, Tensegrity Law Group, McLean, VA, Christopher S. Casieri, Pro Hac Vice, McNeely Hare & War, Princeton, NJ, Crystal T. Broughan, Marks Gray, PA, Jacksonville, FL, Daniel M. Radke, Pro Hac Vice, Matthew D. Powers, Pro

Hac Vice, Robert L. Gerrity, Pro Hac Vice, Tensegrity Law Group LLP, Redwood Shores, CA, Renita S. Rathinam, Pro Hac Vice, McNeely, Hare & War LLP, Washington, DC, for Defendants Artemis Distribution, LLC, Simon Mansell.

Alton Hare, Tensegrity Law Group, McLean, VA, Crystal T. Broughan, Marks Gray, PA, Jacksonville, FL, Daniel M. Radke, Pro Hac Vice, Matthew D. Powers, Pro Hac Vice, Robert L. Gerrity, Pro Hac Vice, Tensegrity Law Group LLP, Redwood Shores, CA, for Defendant Lumiere, SRL.

Alejandro G. Martinez-Maldonado, Thomas Herbert Stanton, Stanton IP Law Firm, P.A., Tampa, FL, James R. Menker, Holley & Menker, PA, Atlantic Beach, FL, William Jason Odom, North Florida Lawyers, PLLC, St. Augustine, FL, for Third-Party Defendant.

ORDER

TIMOTHY J. CORRIGAN, United States District Judge

This case is before the Court on the Report and Recommendation on Motions for Summary Judgment and to Exclude Expert Testimony (Doc. 252/258), to which Artemis Distribution, LLC, and Simon Mansell have filed an Objection (Doc. 256), and Open Sea Distribution Corp., Pro Design Plus SAS, and Neil Porras have filed a Response (Doc. 259). Upon de novo review, it is hereby

ORDERED:

1. The objections (Doc. 256) are OVERRULED.

2. The Report and Recommendation (Doc. 252/258) is ADOPTED as the decision of the Court as follows:

a. The Court construes Open Sea and Pro Design's trademark-related claims and defenses to encompass the right to the stylized Cryoskin mark under United States Trademark Registration Number 6098247, as well as common-law rights to "Cryoskin" and variations thereof;

b. Artemis's motion for summary judgment on Open Sea and Pro Design's demand for profits (Doc. 177) is DENIED;

c. Open Sea and Pro Design's motion for partial summary judgment (Doc. 179/200) is GRANTED IN PART and DENIED IN PART:

i. Summary judgment on the claims and counterclaims dependent on trademark infringement and unfair competition (Doc. 179/200 at 16-23) is DENIED;

ii. Summary judgment on Artemis's counterclaim against Pro Design for fraud in the inducement and fraudulent misrepresentation (Doc. 179/200 at 23-28) is DENIED;

iii. Summary judgment on Artemis's counterclaims against Open Sea and Pro Design for defamation (Docs. 179/200 at 28) and tortious interference with business relations (Doc. 179/200 at 28-29) is GRANTED;

d. Summary judgment on Artemis's third-party claims against Porras for defamation and tortious interference with business relations is GRANTED;

e. Artemis's motion for summary judgment that Open Sea and Pro Design cannot rely on section 5 of the Lanham Act, 15 U.S.C. § 1055, as a defense and on Artemis's counterclaim of non-infringement (Doc. 184) is DENIED;

With respect to the Daubert motions ruled upon in the Report and Recommendation at paragraphs (9), (10), and (11) of the decretal (Doc. 252/258 at 155), the Court accepts the Report and Recommendation as the foundation for further discussion of the Daubert issues at the final pretrial conference. The motions (Docs. 174, 175/196, 176) are DEFERRED and taken under advisement.

3. After good-faith discussions between the parties, no later than October 10, 2023, the parties must file a joint statement regarding:

a. Whether the parties prefer a second mediation (and the identity of the mediator) or a settlement conference with a judge;

b. The status of Lumiere SRL;

c. If the case does not settle, a time-frame for scheduling a final pretrial conference and trial date;

d. An estimate of the length of trial and whether it will be jury or non-jury; and

e. In an effort to establish a date certain for trial, whether the parties would consent to a magistrate judge trying the case.

4. With respect to the numbered paragraphs of the attachment to the Report and Recommendation (Doc. 252-1), the parties should incorporate those that can be agreed upon into the final pretrial statement as stipulated facts.

DONE AND ORDERED in Jacksonville, Florida, the 19th day of September, 2023.

Report and Recommendation on Motions for Summary Judgment and to Exclude Expert Testimony¹

Patricia D. Barksdale, United States Magistrate Judge

I. Overview

This lawsuit primarily concerns who may use the word "cryoskin" as a mark or brand for cryotherapy devices and services sold in the United States: Pro Design Plus SAS ("Pro Design") and its current distributor, Open Sea Distribution Company ("Open Sea"),² or Artemis Distribution, LLC ("Artemis"), Lumiere SRL ("Lumiere"), and one of their owners, Simon Mansell ("Mansell").³ Artemis had been Pro Design's exclusive distributor in the United States for devices bearing a Cryo Skin 2.0 mark or a CRYOSKIN mark ("the stylized Cryoskin mark"). But the relationship turned cold. Unfortunately, the companies never reduced to writing their understanding of their respective intellectual property rights. This litigation is the consequence of that failure.

Six parties and seventeen federal and state claims, counterclaims, and third-party claims are involved. D46, D112. Most claims and counterclaims concern alleged trademark infringement and unfair competition. One counterclaim concerns alleged statements by Pro Design agents to get Artemis to enter into the exclusive distribution agreement. Two counterclaims and the third-party claims concern statements by a Pro Design agent, Cedric Blanc ("Blanc"), and Open Sea's owner, Neil Porras ("Porras"), allegedly to defame Artemis. Both sides demand a jury trial.

The Court denied a motion to dismiss by Mansell, ruling that the Court has jurisdiction over him. D107 at 6-7. The Court denied a motion to dismiss by Pro Design, Open Sea, and Porras, ruling that Artemis sufficiently pleads its counterclaims and third-party claims. D107 at 7-8. The Court denied a motion for a preliminary injunction by Pro Design and Open Sea, ruling that they had failed to show "imminent irreparable harm." D136 at 4-5.

A proceeding before the United States Patent and Trademark Office ("PTO") to cancel United States Trademark Registration Number 6098247 ("the '247 registration") owned by Pro Design for the stylized Cryoskin mark is stayed pending the outcome of this litigation.

United States Trademark Application Serial No. 88007849 for the trademark "Cryoskin" (with no claim to font, size, or color) ("the '849 application") by Artemis is suspended at Artemis's request.

Before the Court are six motions: three motions for summary judgment and three motions to exclude expert testimony. For the motions, the parties rely primarily on declarations, exhibits to the declarations, expert reports, and transcripts of depositions.⁴

First, Pro Design and Open Sea move for summary judgment against Artemis and Mansell on most claims and counterclaims. D179 (motion), SD200 (sealed motion), D210 (response by Artemis), D222 (reply).

Second, Artemis moves for summary judgment on Pro Design and Open Sea's demand for disgorgement of profits. D177 (motion), D206 (response), SD225 (sealed response), D220 (reply).

Third, Artemis moves for summary judgment against Pro Design and Open Sea on a claim for declaratory judgment of non-infringement of the '247 registration (and a ruling that Pro Design and Open Sea may not use an asserted affirmative defense).⁵ D184 (motion), D205 (response), SD224 (sealed response), D219 (reply), D237 (order permitting sur-reply), D241 (sur-reply).

Fourth, Pro Design and Open Sea move to exclude opinions and testimony of Artemis's trademark expert, Rany Simms. D174 (motion), D208 (response), D216 (order permitting reply), D227 (reply).

Fifth, Pro Design and Open Sea move to exclude opinions and testimony of Artemis's damages expert, Dr. Mickey Ferri. D175 (motion), SD196 (sealed motion), D209 (response).

And sixth, Artemis moves to exclude opinions and testimony of Pro Design and Open Sea's damages expert, Graham Rogers. D176 (motion), D203 (response).

The motions have been referred to the undersigned for a report and recommendation on appropriate resolutions. D235. The parties present many alternative arguments. When warranted by the interests of judicial economy, only the strongest argument is analyzed.

The Court earlier vacated the case management and scheduling order to "give the Court sufficient time to consider the numerous pending motions." D194 ¶7.

In May 2023, the undersigned conducted a telephone conference "to discuss the status of settlement...